Maintain a trade mark

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Maintain a trade mark

Once you have filed your trade mark there are a number of things you can do to maintain your application or registration.

You can make limited changes through our online case management facility. There are no charges for these services apart from trade mark renewals.

Change ownership

Under section 82(2) of the Trade Marks Act 2002 the owner or applicant of a trade mark may assign or transmit ownership of the mark.

You can only change the ownership of registered trade marks or current applications. This includes trade marks with the status of ‘Registered - past expiry date’.

Requests to assign or transmit the ownership of a trade mark must be submitted through our online case management facility. The Commissioner will accept any supporting documentation that contains all the details required by the regulations. If you need assistance, contact us during business hours.

Note that new owners must have a valid address for service in New Zealand or Australia, as this is a requirement under regulation 13 of the Trade Marks Regulations 2003.

Before you begin

To file a change of ownership request, you must have a digital or scanned document that provides proof of the assignee’s title to the trade mark.

Your document can be a deed of assignment or a sale and purchase agreement. This document must contain the signature of both parties to the transaction, and the date on which the assignment or transmission took effect.

If neither of these documents is applicable, you may submit a statutory declaration stating that the trade mark is owned by a proprietor who is different from the registered owner or the applicant.

How to file your assignment request

  1. Log on as a registered user of the website. Find out more about becoming a registered user.
  2. Under Trade Mark, select Maintain a Trade Mark from the left hand menu of your Inbox. The Trade Mark Change Request(s) page displays.
  3. Under Change Owner, click the Select case(s) for Assignment button. Search for and select one or more trade marks for which you want to change the owner. The Record a Change of Ownership on Trade Mark(s) form displays.
  4. Enter your Client Reference.
  5. Select whether you are:
    • The owner (old or new). This option will list you as the new owner of the case. If you are not the new owner, you may select the Remove button, then click on the Search button and search for the correct new owner.
    • Acting on behalf of the owner. This option will allow you to facilitate the transfer of the case to a new owner, and will list you as the new agent for the case. You will need to search for the new owner for the trade mark. If you are not acting as agent for this trade mark, you may select the Remove button, then click on the Search button and search for the correct agent.
    • Acting on behalf of the owner for this request only. This option will allow you to facilitate the transfer of the case to a new owner, but will not list you as the new agent for the case. You will need to search for the new owner for the trade mark. You will also need to provide documentation indicating that you have been authorised to facilitate this transfer. If this case has an existing agent, this agent will be retained, and your documentation should include an agreement between the new owner and this existing agent.
  • Add the necessary documentary evidence to support your request, then click the Submit button to complete the form.

Partial assignments

If the assignment or transmission of the trade mark relates to only some of the goods and/or services, please make a Division/Partial Change of Ownership request first: The trade mark must first be divided into two or more separate marks, and then one or more of the resulting marks must be assigned or transmitted to the new owner(s).

Change the address of an owner or agent

When an address for service, business or residential address, or a communication address has changed, a notice of change of address must be filed with the Commissioner of patents, trade marks and designs. 

In order to update the address of an owner or agent, you must make the change to the register entry for that owner or agent – not to the trade mark case itself. Once the address of that entity has been updated, it will propagate across all cases where that owner or agent is involved.

All national trade marks must have an address for service in New Zealand.

  1. Log on as a registered user of the website. Find out more about becoming a registered user.
  2. Select Maintain Client from the User menu of your Inbox. The Search Client page displays.
  3. Search for your client record and select Edit to modify. You can add or remove addresses.
  4. Submit to complete your changes.

Change the name of an owner or agent

You can make a request online to modify a name of an entity in the trade mark register. There is no charge for this service. Note that you must provide supporting documentation confirming the name change, such as a certificate from the Registrar of Companies.

In order to update the name of an owner or agent, you must make the change to the register entry for that owner or agent – not to the trade mark case itself. Once the name of that entity has been updated, it will propagate across all cases where that owner or agent is involved.

  1. Log on as a registered user of the website. See becoming a registered user.
  2. Select Maintain Client from the My Account menu of your Inbox. The Search IPONZ Client Database page displays.
  3. Search for your client record. If you are a New Zealand company, search for your name or NZBN number in the Search NZBN Register field. Otherwise, modify your name in the Name field.
  4. Select Add in the Document section to upload your supporting documentation.
  5. Select Submit to complete your request.

Request an amendment, change goods or services, or division of application

After you have applied for a trade mark and before your mark is registered, you may request to make limited amendments to a trade mark application. For example, you may change goods and services specifications, or divide your trade mark application. You are also able to re-order your images by clicking on the representation and dragging it to a new position.

  1. Log on as a registered user of the website. See becoming a registered user.
  2. Select Maintain a Trade Mark from the left hand menu of your Inbox. The Trade Mark Change Request(s) page displays.
  3. Select Amendment, Change Goods and Services Specifications or Division/Partial Change of Ownership. The Search Trade Mark Case screen displays.
  4. Search for the trade mark application that you want to amend and then Select.
  5. Enter your Client Reference and make the changes following the onscreen help. If you are filing a Division/Partial Change of Ownership request, you must upload a document that supports the request.
  6. Click Submit.
  7. The Trade Mark Change Request(s) screen displays and a confirmation Info box appears. Click OK to close the box.
  8. If the application has an outstanding Respond to Compliance Report task, you will be prompted to select whether you would like to:
    a. Respond to the examination issues later - this submits your change request, but leaves the response task with you; or
    b. Also complete examination response task - this submits your change request, and submits it as your response to IPONZ.

Change an agent

You can make a request for an agent to be assigned to, or changed for, a trade mark. There is no charge for this service.

Note – you must provide supporting documentation confirming the agent is authorised to act, for example, a document signed by the applicant or owner stating you have authority. See our practice guideline for more information: Agents

If you are changing or adding an agent to an international registration select Maintain an International Registration Designating NZ (NZD) click Change Agent and follow the instructions from step 3 below.

  1. You will need to be logged on as a registered user of the website.
  2. Select Maintain a Trade Mark from the left hand menu of your Inbox. The Request Trade Mark Change page will display.
  3. Click Select cases for Change Agent from the Change Agent section to Search Trade Mark Case(s). You can search for one or more trade marks. Once you have identified the correct cases tick the check box for each case. Then click the Select button.
  4. Enter your Client Reference.
  5. Select whether you are the new agent or an additional agent then search for your agent details.
    Note - if the new agent is not the same for each case, select each case to modify it individually.
  6. Select the Add button in the Documentary Evidence section to upload your Agent Authorisation documentation. See our sample form to help you with this: Agent Authority [174 KB PDF].
  7. Select Submit to complete your request.

Removing an agent:

If you are already the agent for an IP case you will be given the additional option to remove yourself as the agent.

Renew a trade mark

For guidance on how to renew a trade mark registration, please visit our Renew a Trade Mark page.

If a trade mark registration is not renewed by its renewal due date, the status of the trade mark registration will change to ‘Registered - past expiry date’. A trade mark with ‘Registered - past expiry date’ status can be restored by renewing it within 6 months of its renewal due date.

Restore a trade mark registration

Trade marks not renewed before the expiry of the renewal due date are given the status ‘Registered - past expiry date’.

A trade mark registration with the ‘Registered - past expiry date’ status may only be restored to the register if it is renewed within 6 months of its last renewal due date.

An expired trade mark that is beyond 6 months of its last renewal due date may no longer be restored. If you still wish to seek protection for an expired non-restorable trade mark, you will need to file a new trade mark application.

For guidance on how to restore a ‘Registered - past expiry date’ trade mark, please visit our Renew a Trade Mark page.

Request to merge a trade mark

You can apply to merge two or more trade mark applications or registrations into one.

1. Examination

The Commissioner examines all requests to merge separate trade mark applications or registrations to make sure they:

  • are for the same mark or series of marks
  • have the same filing date and convention priority date (if any)
  • have the same status, e.g. ‘Accepted’, ‘Registered’, or ‘Registered - past expiry date’
  • are in the name of the same applicant or owner
  • are classified according to the same edition of the Nice Classification.

For more information about these requirements, see Practice guideline 18: Merger.

2. Reflection in the register

You can view the details of successfully merged applications or registrations through the online register.

Merged marks take on the lowest trade mark number. Any changes to the application or registration are reflected in the details of that trade mark. The details of the other trade marks are viewable as a historic record; however, the status of those marks or applications is noted as Merged. The application or registration numbers also appear in the Related Trade Marks field of all marks.

3. Rejection

If the details of an application for merger are not in order, you’ll be sent a Notice of Rejection of Merger, stating the grounds on which the Commissioner rejects the application to merge the trade marks.

To request to merge trade marks:

  1. Log on as a registered user of the website. Find out more about becoming a registered user.
  2. Select Maintain a Trade Mark from the left hand menu of your Inbox. The Request Trade Mark Change page displays.
  3. Select cases(s) for Merge. The Search Trade Mark Case screen displays.
  4. Search for the trade marks that you wish to merge, and then Select the correct cases.
  5. Enter your Client Reference and make the changes following the onscreen help.
  6. Submit.
  7. The Request Trade Mark Change screen displays and a confirmation Info box appears. Click OK to close the box.

Withdraw an application

You can request to withdraw your application for a trade mark. Note that once a mark is withdrawn, it is not possible to reinstate the mark’s previous status. All rights attached to the mark, granted through the application, will be immediately relinquished.

There is no charge for this service.

To withdraw an application:

  1. Log on as a registered user of the website. Find out more about becoming a registered user.
  2. Select Maintain a Trade Mark from the left hand menu of your Inbox. The Request Trade Mark Change page displays.
  3. Select cases(s) for Withdrawal from the Withdrawal section to Search Trade Mark Case(s). Search for one or more Trade Marks that you want to withdraw, and then Select correct cases.
  4. Check the Confirm withdrawal of trade mark(s).
  5. Submit.
  6. You will return to the Request Trade Mark Change page and a confirmation Info box will display. Select OK to close the box.

    Request abeyance

    You can place your application in abeyance or suspension pending the outcome of opposition proceedings for a prior application or cancellation/revocation/invalidity proceedings to do with a prior registration. To do this, you must notify the Commissioner before the expiry of the deadline set in the compliance report. After the facts are verified, the Commissioner places the application in abeyance pending the outcome of the proceedings. To request abeyance of an application:

    1. Log on as a registered user of the website. Find out more about becoming a registered user.
    2. Select Maintain a Trade Mark from the left hand menu of your Inbox. The Request Trade Mark Change page displays.
    3. Select Abeyance.
    4. Search for the application to be placed into abeyance, and then Select the correct case. The Request Abeyance on a Trade Mark screen displays.
    5. Enter your Client Reference.
    6. Select Search to find the application(s) that are under-proceedings and which have bearing on your application. Choose the results and Select. The Request Abeyance screen displays.
    7. You can upload a document or add a file note to support your request, and then Select.
    8. The Request Trade Mark Change screen displays and a confirmation Info box appears. Click OK to close the box.

    Request continued processing for an abandoned application

    You may apply for continued processing on an abandoned application within two months of the trade mark going abandoned. In order for the application to be restored to examination status, you must upload a response in the request which relates to all outstanding objections raised in relation your application for consideration. A continued processing request can only be successfully processed once per application. To request continued processing:

    1. Log on as a registered user of the website. Find out more about becoming a registered user.
    2. Select Maintain a Trade Mark from the left hand menu of your Inbox. The Request Trade Mark Change page displays.
    3. Select Continued Processing. The Search Trade Mark Case screen displays.
    4. Search for the trade mark that you wish to amend, and then Select the correct case.
    5. Enter your Client Reference and make the changes following the onscreen help.
    6. Select Add in the Documentary Evidence section to upload your compliance report response. Note that this response must include a response in relation to all the substantive objections set out in the previous compliance report(s).
    7. Submit to complete your request.

    Cancel a registered trade mark

    After your trade mark is registered, you can request to cancel its registration at any time. Note that once a mark is cancelled, it is not possible to reinstate the mark’s previous status. All rights attached to the mark will be immediately relinquished.

    There is no charge for this service.

    To cancel a registered trade mark:

    1. Log on as a registered user of the website. Find out more about becoming a registered user.

    2. Select Maintain a Trade Mark from the left hand menu of your Inbox. The Request Trade Mark Change page displays.

    3. Select Cancellation. The Request a Cancellation of Trade Mark screen displays.

    4. Select case(s) for Cancellation from the Cancellation section. Search for one or more Trade Marks that you want to cancel, and then Select the correct cases.

    5. Check Confirm cancellation of trade mark(s).

    6. Submit.

    7. The Request Trade Mark Change screen displays and a confirmation Info box appears. Click OK to close the box.

    Alter a registered trade mark

    After your trade mark is registered, you can request to make limited amendments to remove classes and descriptions of goods or services; enter, remove or alter a memorandum, and alter regulations for a certification mark, or correct an error or omission in the register. To request an alteration or rectification:

    1. Log on as a registered user of the website. Find out more about becoming a registered user.
    2. Select Maintain a Trade Mark from the left hand menu of your Inbox. The Request Trade Mark Change page displays.
    3. Select Alteration/Rectification. The Search Trade Mark Case screen displays.
    4. Search for the trade mark that you want to amend, and then Select the correct case.
    5. Enter your Client Reference and make the changes following the onscreen help.
    6. Submit.
    7. The Request Trade Mark Change screen displays and a confirmation Info box appears. Click OK to close the box.

    Regenerate a certificate of registration

    If you are the owner or the agent for a registered trade mark, you can regenerate its certificate of registration and have the new copy added to your case. This may be useful if your trade mark has recently changed ownership, or has had any updated information that would be reflected in its certificate.

    The regenerated certificate of registration will reflect your trade mark as it is currently recorded in the register.

    If your trade mark is in ‘Registered - past expiry date’ status due to the non-payment of a renewal fee, we recommend that you first pay the renewal fee before regenerating the certificate of registration.

    1. Log on as a registered user of the website. See becoming a registered user.
    2. Select Maintain a Trade Mark from the left hand menu of your Inbox. The Request Trade Mark Change page displays.
    3. Select Regenerate Registration Certificate. The Search Trade Mark Case screen displays.
    4. Search for the trade mark whose certificate you wish to regenerate, and then Select the correct case.
    5. Submit.
    6. The Request Trade Mark Change screen displays and a confirmation Info box appears. Click OK to close the box.

    A regenerated certificate of registration will be produced and added to the documents for your trade mark case. A corresponding email notification and discussion will then be sent to the user in charge for that case.